| To: | Otsuka Pharmaceutical Co., Ltd. (docketing@finnegan.com) |
| Subject: | TRADEMARK APPLICATION NO. 77300289 - OTSUKA - 04676.0999 |
| Sent: | 12/13/2007 3:12:35 PM |
| Sent As: | ECOM102@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/300289
MARK: OTSUKA
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: Otsuka Pharmaceutical Co., Ltd.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.
ISSUE/MAILING DATE: 12/13/2007
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
The Office records have been searched and no similar registered or pending mark has been found that would bar registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02.
Section 2(e)(4) Refusal – Mark Is A Surname
Registration is refused because the proposed mark is primarily merely a surname. Trademark Act Section 2(e)(4), 15 U.S.C. §1052(e)(4); TMEP §§1211 et seq. The primary significance of the mark to the purchasing public determines whether a term is primarily merely a surname. In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653 (Fed. Cir. 1985); In re Kahan & Weisz Jewelry Mfg. Corp., 508 F.2d 831, 184 USPQ 421 (C.C.P.A. 1975).
Please see the attached evidence from whitepages.com, establishing the surname significance of the surname Otsuka. This evidence shows the proposed mark appearing at least 300 times as a surname in a nationwide telephone directory of names.
The following five factors are used to determine whether a mark is primarily merely a surname:
(1) The rareness of the surname;
(2) Whether anyone connected with applicant uses the mark as a surname;
(3) Whether the term has any recognized meaning other than as a surname;
(4) Whether the mark has the structure and pronunciation of a surname; and
(5) Whether the mark is sufficiently stylized to remove its primary significance from that of a surname.
In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333-1334 (TTAB 1995); TMEP §1211.01.
The examining attorney asserts the following: (1) that number of entries referenced in the whitepages.com directory evidence indicates that OTSUKA is not a rare surname; (2) that the founder of the applicant had the surname OTSUKA; (3) that the term does not have any recognized meaning other than a surname; and (4), that the stylization of the mark in the application is insufficient to remove its primary significance from that of a surname. Consequently, registration is refused on the Principal Register.
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
Amendment to Supplemental Register Suggested
Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal(s), such a response is not appropriate in the present case. The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use under 37 C.F.R. §2.76(b), (c) has been timely filed. 37 C.F.R. §2.47(d); TMEP §§815.02, 816.02, 1102.03.
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the effective filing date of the application will then be the date on which applicant met the minimum filing requirements of 37 C.F.R. §2.76(e) for the amendment to allege use. 37 C.F.R. §§2.75(b), 2.76 (b), (c); TMEP §§206.01, 816.02, 1102.03, 1104.01.
If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).
Classification and Identification of Goods and Services
Substantial portions of applicant’s identification of goods and services are unacceptable because specific wording is indefinite, misclassified, or includes extraneous parenthetical matter that must be deleted. TMEP §1402.01. The examining attorney notes below all required changes and offers suggestions where possible. Applicant may adopt the following identification of goods and services, if accurate:
Class 03: “Anti-static preparations for household purposes; De-greasing preparations for household purposes; Rust removing preparations; Stain removing benzine; Fabric softeners for laundry use; Laundry bleach; Adhesives for affixing false hair; Adhesives for affixing false eyelashes; Laundry starch; Seaweed gelatine for laundry use (Funori); Paint stripping preparations; Shoe and boot cream; Shoe black; Polishing preparations; Soaps and detergents; Dentifrices; Cosmetics and non-medicated toiletries; Perfumery, fragrances and incenses; Abrasive paper; Abrasive cloth; Abrasive sand; Artificial pumice stone for personal use; Polishing paper; impregnated polishing cloth; False nails; False eyelashes”
Class 05: “Nutritional supplements and beverages for medical use; Dietetic foods adapted for medical purposes; Dietetic beverages adapted for medical purposes; Pharmaceutical, veterinary and sanitary preparations, used in the treatment of {describe purpose of ailment being treated}; Oiled paper for medical purposes {nature of goods unclear – describe goods in further detail}; Sanitary masks; Pharmaceutical wafer; Gauze for dressings; Empty unit dose capsules for pharmaceuticals; Eye patches for medical use; Ear bandages; Menstruation bandages; Menstruation tampons; Sanitary napkins; Sanitary panties for medical use; Absorbent cotton for medical use; Adhesive plasters for medical use; Bandages for dressings; Medical adhesive in the nature of collodion for skin wounds; Breast-nursing pads; Dental materials, namely {specify common commercial name of each dental material}; Magnetic bracelets for medical purposes; Incontinence diapers; Fly catching paper; Mothproofing paper; Lactic ferments and lactose for the treatment of {specify ailment being treated}; Powdered milk for babies; Semen for artificial insemination; Food for babies; cotton swabs for medical purposes”
Class 10: “Pacifiers for babies; Ice bag pillows for medical purposes; Triangular support bandages; Supportive bandages; Surgical catguts; Feeding cups for medical purposes; Dropping pipettes for medical purposes; Teats; Medical ice bags; Medical Ice bag holders; Baby bottles; Vacuum bottles for nursing; Finger guards for medical purposes; Contraceptives; Artificial tympanic membranes; Prosthetic and filling materials, namely artificial materials for use in the replacement of bones; esthetic massage apparatus for industrial purposes; Medical machines and apparatus for {indicate purpose or function of goods}; Electric massage apparatus for household use; Gloves for medical purposes; Urinals for medical purposes; Bed pans; Ear picks”
Class 29: “Food-supplements containing soybeans (in the form of solid and liquid); Edible oils and fats; Milk products, excluding ice cream, ice milk and frozen yogurt; Fresh, chilled or frozen meat for human consumption; Eggs; Edible aquatic animals (not live, fresh, chilled or frozen) {nature goods unclear – specify the aquatic animals}; Frozen vegetables; Frozen fruits; Processed meat; Processed fisheries products {the wording fisheries is unclear – specify exact goods}; Processed vegetables and fruits; Fried tofu pieces (Abura-age); Freeze-dried tofu pieces (Kohri-dofu); Jelly made from devils' tongue root (Konnyaku); Soybean milk; Tofu; Fermented soybeans (Natto); Processed eggs; stew and soup mixes; Dried flakes of laver for sprinkling on rice in hot water (Ochazuke-nori); Seasoned powder for sprinkling on rice in the nature {chili powder? curry powder?} (Furi-kake); Fermented soybean foods as accompaniment (Name-mono); Raw pulses; Protein for human consumption; milk proteins”
Applicant must clarify all of the remaining goods below presently in Class 29 – it is unclear if these goods belong in Class 29 or in Class 05 as “dietary food supplements,” “mineral food supplements,” “vitamin supplements,” and “nutritional supplements.”
Food-supplements containing soybeans (in the form of jelly, powder, granules, capsules and chewable tablets); Food-supplements containing proteins, fats and carbohydrates (in the form of solid, liquid, jelly, powder, granules, capsules and chewable tablets); Food-supplements containing proteins, dietary fibers and calcium (in the form of solid, liquid, jelly, powder, granules, capsules and chewable tablets); Food-supplements containing whey-proteins, dextrin, corn oils, apple juices, reduced dextrin, nonfat dry milks and agars and combined with vitamins and minerals (in the form of solid, liquid, jelly, powder, granules, capsules and chewable tablets); Food-supplements containing dextrin, milk proteins, reduced dextrin, corns, edible vegetable oils and polydextrose and combined with vitamins and minerals (in the form of solid, liquid, jelly, powder, granules, capsules and chewable tablets); Food-supplements containing fruits (in the form of solid, liquid, jelly, powder, granules, capsules and chewable tablets); Food-supplements containing vitamins (in the form of solid, liquid, jelly, powder, granules, capsules and chewable tablets); Food-supplements containing minerals (in the form of solid, liquid, jelly, powder, granules, capsules and chewable tablets); Food-supplements containing amino acids (in the form of solid, liquid, jelly, powder, granules, capsules and chewable tablets); Food-supplements containing dietary fibers (in the form of solid, liquid, jelly, powder, granules, capsules and chewable tablets); Food-supplements containing vegetables (in the form of solid, liquid, jelly, powder, granules, capsules and chewable tablets)
Class 30: “Curry”
Class 32: “Starch-based binding agents for ice cream; Meat tenderizers for household purposes; Starch-based preparations for stiffening whipped cream; Aromatic preparations for food (not from "Essential oils") {nature of goods unclear – explain further}; Tea; Coffee and cocoa; Ice; Confectionery, namely {specify commercial name of goods, e.g., candy}, bread and buns; Seasonings; Spices; Ice cream mixes; Sherbet mixes; Unroasted coffee; Cereal preparations, namely {indicate specific items}; Almond paste; Chinese stuffed dumplings (Gyoza, cooked); Sandwiches; Chinese steamed dumplings (Shumai, cooked); Sushi; Fried balls of batter mix with small pieces of octopus (Takoyaki); Steamed buns stuffed with minced meat (Niku-manjuh); Hamburger sandwiches; Pizzas; Box lunches comprised of {specify contents of goods, appropriate for Class 30}; Hot dog sandwiches; Meat pies; Ravioli; Yeast powder; Fermenting malted rice (Koji); Yeast; Baking powder; Instant confectionery mixes for {indicate nature of confectionery}; Sake lees (for food) {nature of goods unclear – clarify}; Husked rice; Husked oats; Husked barley; Flour for food; Gluten for food”
As in Class 29, applicant must clarify all of its below food-supplement entries and clarify the use the of the wording “supplements.” The following wording is acceptable: “Propolis for food purposes; honey; processed cereals; royal jelly for food purposes”
Food-supplements containing milk proteins (in the form of solid, liquid, jelly, powder, granules, capsules and chewable tablets); Food-supplements containing cereals (in the form of solid, liquid, jelly, powder, granules, capsules and chewable tablets); Food-supplements containing teas (in the form of solid, liquid, jelly, powder, granules, capsules and chewable tablets); Food-supplements containing honeys (in the form of solid, liquid, jelly, powder, granules, capsules and chewable tablets); Food-supplements containing oligosaccharides (in the form of solid, liquid, jelly, powder, granules, capsules and chewable tablets); Food-supplements containing propolis (in the form of solid, liquid, jelly, powder, granules, capsules and chewable tablets); Food-supplements containing royal jellies (in the form of solid, liquid, jelly, powder, granules, capsules and chewable tablets)
Class 32: “Beer; Carbonated soft-drinks and waters; Non-alcoholic fruit juice beverages; Extracts of hops for making beer; Whey beverages; Vegetable juices”
Class 41: “Operating lotteries; Instruction services relating to arts, crafts, sports {and indicate other specific fields if necessary}; Arranging of seminars; Animal training; Plant exhibitions; Animal exhibitions; Providing electronic publications in the nature of {magazines, books, etc.}; Reference libraries of literature and documentary records; Art exhibitions; Gardens for public admission; Caves for public admission; Publication of books; Planning and arrangement of showing movies, shows, plays or musical performances; movie film production, movie film distribution; Presentation of live show performances; Direction or presentation of plays; Presentation of musical performance; Production of radio or television programs; Production of video tape film in the fields of education, culture, entertainment and sports; Direction of making radio or television programs; Operation of video equipment or audio equipment etc. for production of radio or television programs; Arranging and conducting sports competitions; Arranging and conducting entertainment, namely {specify common commercial name of form of entertainment}; Arranging and conducting horse races; Arranging and conducting bicycle races; Arranging and conducting boat races; Arranging and conducting auto races; Providing audio or video studios; Providing sports facilities; Providing amusement facilities; Providing facilities for movies, shows, plays, music or educational training; Booking of seats for shows; Rental of Cinematographic machines and apparatus; Rental of cine-films; Rental of musical instruments; Rental of sports equipment; Rental of television sets; Rental of radio sets; Book rental; Rental of records or sound-recorded magnetic tapes; Rental of image-recorded magnetic tapes; Rental of negatives {nature of services unclear – clarify}; Rental of positives {nature of services unclear – clarify}; Rental of toys; Rental of amusement machines and apparatus; Rental of game machines and apparatus; Rental of paintings and calligraphic works; Photography; Language interpretation; Translation; Rental of cameras; Rental of optical machines and instruments, namely {specify common commercial name of machines or more specific wording for field of goods}”
Class 42: “Providing meteorological information; Architectural design; Surveying; Geological surveys or research; Designing of machines, apparatus, instruments or systems composed of such machines, apparatus and instruments; Design services for {describe nature of services}; Computer software design, computer programming, or maintenance of computer software; Technical advice relating to performance, operation, etc. of computers, automobiles and other machines that require high levels of personal knowledge, skill or experience of the operators to meet the required accuracy in operating them; Testing, inspection or research of pharmaceuticals, cosmetics or foodstuff; Research on building construction or city planning; Testing or research on prevention of pollution; Testing or research on electricity; Testing or research on civil engineering; Testing, inspection or research on agriculture, livestock breeding or fisheries; Testing or research on machines, apparatus and instruments; Agencies for social insurance {nature of services unclear – clarify}; Rental of measuring apparatus; Rental of computers; Providing computer programs {explain – could be goods in Class 09, could be on-line non-downloadable software in Class 42}; Rental of laboratory apparatus and instruments; Rental of drawing instruments; Providing information on donation of human corpses for medical research; Arranging of donation of human corpses for medical research {moved from Class 41}”
Class 44: “Beauty salons; Hairdressing salons; Providing bath houses; Garden or flower bed care; Garden tree planting; Fertilizer spreading; Weed killing; Vermin exterminating; Massage and therapeutic shiatsu massage; Chiropractics; Moxibustion; Treatment to joint-dislocation, sprain, bone-fracture or the like (Judo-seifuku); Acupuncture; Medical services; Providing medical information; Physical examination in the nature of a medical exam; Dentistry; Preparation and dispensing of medications; Dietary and nutritional guidance; Animal breeding; Veterinary services; Rental of potted plants; Farming equipment rental; Rental of medical machines and apparatus; Rental of fishing machines and instruments; Rental of machines and apparatus for use in beauty salons or barbers' shops; Rental of lawnmowers”
Class 45: “Licensing of intellectual property, namely licensing of copyright protected material {moved from Class 42}”
Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.
For assistance with identifying and classifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.
Multi-Class Applications
If applicant prosecutes this application as a combined, or multiple-class application, applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):
(1) Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order; and
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).
37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.
The filing fee for adding classes to an application is as follows:
(1) $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and
(2) $375 per class, when the fees are submitted with a paper response.
37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
/Jordan A. Baker/
Trademark Examining Attorney
Law Office 102
571-272-8844
jordan.baker@uspto.gov
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office action should be filed using the form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as the USPTO does not accept e-mailed responses.
If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.
